stances of the case any action of the appellee that tended to mislead the appellant to its prejudice. The latter consented to the admission in evidence of this final decree, coupled with its admission that it had assumed the defense of the Iowa suit. That record could have no other effect in evidence than as res adjudicata. It had no possible function to perform save as a bar to attack upon the validity of the patent. The appellant knew, or should have known, this. It knew, or should have known, that such was the purpose in its introduction. The right of appeal was perfect in the appellant, beyond the control of its opponent. It failed to assert its right. The appellee should not, therefore, lose the benefit of the decree. The consequences must fall where they justly belong, upon the one failing to take advantage of an absolute right.

4. It is insisted that the matter is still at large with respect to certain defenses stated to have been not involved in the former case. This con tention leads to the consideration of the question of the extent of the bar of the former recovery.

In Cromwell v. County of Sac (94 U. S., 351) it was ruled that there existed a difference between the effect of a judgment as a bar or estoppel against the prosecution of a second action upon the same claim or demand and its effect as an estoppel in another action between the same parties upon a different claim or cause of action. The distinction is thus stated by Mr. Justice Field:

In the former case, the judgment, if rendered upon the merits, constitutes an absolute bar to a subsequent action. It is a finality as to the claim or demand in controversy, concluding parties and those in privity with them, not only as to every matter which was offered and received to sustain or defeat the claim or demand, but as to any other admissible matter which might have been offered for that purpose. Thus, for example, a judgment rendered upon a promissory note is conclusive as to the validity of the instrument and the amount due upon it, although it be subsequently alleged that perfect defenses actually existed, of which no proof was offered, such as forgery, want of consideration, or payment. If such defenses were not presented in the action, and established by competent evidence, the subsequent allegation of their existence is of no legal consequence. The judgment is as conclusive, so far as future proceedings at law are concerned, as though the defenses never existed. The language, therefore, which is so often used, that a judgment estops not only as to every ground of recovery or defense actually presented in the action, but also as to every ground which might have been presented, is strictly accurate, when applied to the demand or claim in controversy. Such demand or claim, having passed into judgment, cannot again be brought into litigation between the parties in proceedings at law upon any ground whatever.

But where the second action between the same parties is upon a different claim or demand, the judgment in the prior action operates as an estoppel only as to those matters in issue or points controverted, upon the determination of which the finding or verdict was rendered. In all cases, therefore, where it is sought to apply the estoppel of a judgment rendered upon one cause of action to matters arising in a suit upon a different cause of action, the inquiry must always be as to the point or question actually litigated and determined in the original action, not what might have been thus litigated and determined. Only upon such matters is the judgment conclusive in another action.

In that case Cromwell brought action against the county of Sac upon four bonds of the county and four coupons for interest, attached to them. The county asserted a judgment in a prior action by one Smith upon certain earlier maturing coupons on the samne bonds, and charged that Cromwell was at the time the owner of the coupons so sued upon, and prosecuted the action for his sole use and benefit. It was ruled in that action that the bonds were void except in the hands of a bona fide holder for value, and, failing proof of that fact, judgment was rendered for the county. It was held' that the judgment was conclusive only of the fact that the plaintiff could not recover the amount of the coupons sued for, and for the reason that he had not shown himself a bona fide holder for value, and that finding did not preclude Cromwell from showing in another suit, and as to bonds and coupons not therein involved, that he was a bona fide holder thereof for value.

In Daris v. Brown (C. D., 1881, 385; 20 O. G., 1021; 94 U. S., 423) two of a series of notes had passed into judgment upon the sole defense by the indorsers that they had not been legally charged as such. In a second suit upon certain other notes of the series the defense was asserted of an agreement by the plaintiff not to hold them liable for or to sue them upon their indorsements. The court held the former judg ment not to be res adjudicata upon the new defense asserted to a different demand, saying by Mr. Justice Field, (p. 428:)

When a judgment is offered in evidence in a subsequent action between the same parties upon a different demand, it operates as an estoppel only upon the matter actually at issue and determined in the original action; and such matter, when not disclosed by the pleadings, must be shown by extrinsic evidence.

In Campbell v. Rankin (99 U. S., 261, 263) the doctrine is thus stated by Mr. Justice Miller:

Whatever may have been the opinion of other courts, it has been the doctrine of this Court in regard to suits on contracts ever since the case of Steam Packet Co. v. Sickles (24 How., 333,) and in regard to actions affecting real estate, since Miles v. Caldwell (2 Wall., 35,) that whenever the same question has been in issue and tried, and judgment rendered, it is conclusive of the issue so decided in any subsequent snit between the same parties; and also, that where, from the nature of the pleadings, it would be left in doubt on what precise issue the verdict or judgment was rendered, it is competent to ascertain this by parol evidence on the second trial. The latest expression of the doctrine is found in Cromwell v. County of Sac, 94 U. S., 351; Davis v. Brown, Id., 423.

In Block v. Commissioners (99 U. S., 686, 693) Mr. Justice Strong asserts the doctrine as follows:

Now that a judgment in a suit between two parties is conclusive in any other suit between them, or their privies, of every matter that was decided therein, and that was essential to the decision made, is a doctrine too familiar to need citation of anthorities in its support. A few cases go further, and rule that it is conclusive of matters incidentally cognizable, if they were in fact decided. To this we do not assent. But it is certain that a judgment of a court of competent jurisdiction is everywhere conclusive evidence of every fact upon which it must necessarily have been founded.

In Wilson v. Deen (121 U. 8., 525, 532; 7 Sup. Ct. Rep., 1004) Mr. Justice Field restates the principle thus:

In Cromwell v. County of Sac, 94 U. S., 351, we considered at much length the operation of a judgment as a bar against the prosecution of a second action upon the same demand, and as an estoppel upon the question litigated and determined in another action between the same parties upon a different demand, and we held, following in this respect a long series of decisions, that in the former case the judgment, if rendered upon the merits, is an absolute bar to a subsequent action, a finality to the demand in controversy, concluding parties and those in privity with them; and that in the latter case, that is, where the second action between the same parties is upon a different demand, the judgment in the first action operates as an estoppel as to those matters in issue, or points controverted, upon the determination of which the finding or verdict was rendered.

In Bissell v. Spring Valley Tp. (124 U. S., 225, 231; 8 Sup. Ct. Rep., 495) Mr. Justice Field again restates the doctrine as held by the Court in clear and unequivocal language, as follows:

In Cromwell v. County of Sac, 94 U. S., 351, we drew a distinction between the effect of a judgment as a bar or estoppel against the prosecution of a second action upon the same claim or demand, and its effect as an estoppel in another action between the same parties upon a different claim or demand. In the latter case, which is the one now before us, we held, following numerous decisions to that effect, that the judgment in the prior action operates as an estoppel only as to those matters in issue, or points controverted, upon the determination of which the finding or verdict was rendered. The inquiry in such case, therefore, we said, must always be as to the point or question actually litigated and determined in the original action, for only upon such matters is the judgment conclusive in another action between the parties upon ➜ different demand. Lumber Co. v. Buchtel, 101 U. S., 638; Wilson v. Deen, 121 U. S., 525; 7 Sup. Ct. Rep., 1004.

The rule thus settled has been reiterated by the Court in Nesbit v. Independent Dist., (144 U. S., 610, 618; 12 Sup. Ct. Rep., 746;) Railroad Co. v. Alsbrook, (146 U. S., 279, 302; 13 Sup. Ct. Rep., 72;) McComb v. Frink, (149 U. S., 629, 641; 13 Sup. Ct. Rep., 993.)

In the sense that the present suit is prosecuted for an infringement not involved in the prior adjudication the demand is not the same; but that, we think, is not the proper criterion. The inquiry should be directed to the question whether the right asserted by the party as the foundation of this suit is the same right determined by the previous action, for, if the former test should prevail as the standard, a patentee could never be precluded from asserting the validity of his patent against subsequent infringements by the one who had by previous judgment obtained adjudication against its validity. The former recovery in such case would be conclusive only that the particular devices there involved did not infringe. The question of the validity of the patent would thus forever remain at large, without conclusive determination, We are of opinion, therefore, that this suit is upon the same claim and demand-to wit, the patent that was involved and determined in the former suit. That this must be so appears clearly from an examination of the cases cited. Thus in Wilson v. Deen, supra, the lessor brought action for rental under a lease. The defense was that of fraud in procuring the lease, and judgment passed for the defendant. In another

action between the same parties for rental subsequently accruing under the same lease the former recovery was pleaded in bar, against which it was urged that the demand was not identical, and Cromwell v. County of Sac was invoked to sustain that position. The Court, however, sustained the plea, saying of the former judgment that—

it determined not merely for that case, but for all cases between the same parties, not only that there was nothing due for the rent claimed for the month of Decem ber, 1873, but that the lease itself was procured by fraud, and therefore void.

The Court cites with approval the case of Gardner v. Buckbee, (3 Cow., 120,) where two notes were given upon the sale of a vessel. In an action upon one of the notes the maker pleaded fraud in the sale and a total failure of consideration, and judgment was rendered in his favor. In an action upon the other of the notes the record of the judg ment in the former suit was offered in evidence in bar of the action. The Supreme Court held the judgment conclusive. Instances might be multiplied of like adjudications. We deem it only necessary to refer to, without enlarging upon, the following cases: Lumber Co. v. Buchtel, (101 U. S., 638;) Insurance Co. v. Bangs, (103 U. S., 780;) Elgin v. Marshall, (106 U. S., 578, 579; 1 Sup. Ct. Rep., 484.)

We are compelled, therefore, to the conviction that this suit falls within the first resolution in Cromwell v. County of Sac-namely, that it is a second action upon the same claim or demand-to wit, upon the claim for a monopoly granted by patent-and that the former decree, the question being necessarily involved and at issue in that cause, determines conclusively and for all time, as between the parties thereto and their privies the validity of the patent. It can no more be made the subject of contention between them.

Nor do we apprehend the result could be different if the case could be held to fall within the second resolution of Cromwell v. County of Sac. If this suit can be construed to be upon a different claim or demand because the alleged infringement was in the use of machines not involved in the former suit, still the prior decree would be conclusive upon the matters at issue essential to a recovery and actually determined in such action. The validity of the patent was there at issue. Its invalidity was claimed because, as there asserted, certain specified prior patents described the same invention and because of prior use. The determination of the issue of invalidity was essential to any decree for the complainant in that cause and was determined by the judgment. It is said here that the prior patent to Dalton and prior use by Hague here asserted was not then in.issue. The Dalton patent was distinctly passed upon by the court and was held unavailing to defeat the invention claimed. As to the alleged prior use by Hague, it may be said that it was in the prior suit alleged by the defendant with the sanction of the present appellant that the cultivators complained of as infringing were manufactured under the Letters Patent to Hague of June 21, 1881. This patent was some two weeks subsequent in date to the complainant's

patent and was held to infringe. Prior use by Hague may not have been specifically alleged, but the defendant there attacked the validity of the patent because of prior use and of anticipation by other patents. It was a duty to have asserted all anticipating patents and all prior use. The issue of the pleadings was novelty of invention. The testimony of prior use and of anticipatory patents bore upon the issue of novelty of invention. In a suit at law such issue is tendered by a plea of the general issue, and such evidence may be given thereunder upon giving a certain notice. So in a suit in equity like defense of invalidity may be pleaded

And proofs of the same may be given upon like notice in the answer of the defendant and with the like effect. (R. S., Sec. 4920.)

The statement so required of particular anticipating patents and of prior use is clearly a mere bill of particulars of evidence to establish the issue of want of novelty-not independent issues. So no new defense is here asserted. The matter charged is merely additional evidence in support of the issue presented and determined in the former suit. It was competent evidence in that suit without any statement of it in the pleading, if the objection of the statute was not timely urged. (Webster Loom Co. v. Higgins, C. D., 1882, 285; 21 O. G., 2031; 105 U. S., 580; Zane v. Soffe, C. D., 1884, 113; 26 O. G., 737; 110 U.S., 200, 203; 3 Sup. Ct. Rep., 562.) The proposed evidence comes too late to be availing. The decree of a court is not the less conclusive because a party has failed to produce all the evidence at command or because of newly-discovered evidence. "Expedit reipublicæ ut sit finis litium." The decree will be affirmed.

[Court of Appeals-District of Columbia.]

IN RE SCHAEFFER.

Decided December 4, 1893.

66 O. G., 514.

SCHAEFFER Soluble Alizarin Coloring-MATTER-APPLICATION FOR A PATENTANTICIPATION.

The claims in an application for a patent for a composition of matter consisting of a soluble alizarin coloring-matter Held to have been anticipated and properly rejected by the Commissioner of Patents on the product described in Crookes' "Hand-Book of Dyeing and Calico Printing," London, 1874, pp. 242 to 263.

Mr. Charles L. Sturtevant and Mr. Elmer P. Howe for Schaeffer. Mr. Levin H. Campbell (law clerk) for the Commissioner of Patents. SHEPARD, J:

This is an appeal from the decision of the Commissioner of Patents refusing Henri N. F. Schaeffer a patent for a new coloring-matter, which he claims to have discovered in a compound of alizarin with an alkali, that is of special value in the art of dyeing.